Mixed Results: Federal Circuit’s Intervening § 101 Determination Faces PTAB Dissent
After the US Court of Appeals for the Federal Circuit addressed the very same issue and patent, the Patent Trial and Appeal Board (PTAB) reached a split decision, finding the claims to be patent eligible under § 101 despite new characterizations of the abstract idea and new arguments from the patent owner. IBG LLC v. Trading Techs. Int’l., Inc., Case No. CBM2015-00182 (PTAB, Feb. 28, 2017) (Plenzler, APJ) (Petravick, APJ, dissenting in part).
The patent at issue is directed to a user interface for an electronic trading system that allows a remote trader to view trends for an item. The patent owner asserted this patent against several defendants, who in turn sought covered business method (CBM) patent reviews in America Invents Act proceedings at the PTAB. One of the earlier cases resulted in a determination by the PTAB that the asserted claims were directed to patent-ineligible subject matter under § 101. On appeal of that earlier case, the Federal Circuit reversed and issued a non-precedential decision finding the claims patent eligible. In view of the Federal Circuit’s decision, the PTAB in the instant case allowed further briefing on the impact the Federal Circuit’s decision.
Addressing the patent-eligibility issues in the instant case, petitioner attempted to characterize the abstract idea differently than the Federal Circuit articulated it. The majority, however, found “no persuasive explanation” as to why petitioner’s alternative characterization of the abstract idea would cause the PTAB to deviate from the Federal Circuit’s prior reasoning. Petitioner also argued that the claims were patent ineligible because they were directed to a transitory, propagating signal. The majority again disagreed, finding that the claim limitation requiring a “computer readable medium having program code recorded thereon” meant that the claims were directed to a fixed, non-transitory medium. Thus, the majority adopted the Federal Circuit’s reasoning and determined that petitioner failed to establish that the claims were patent ineligible.
The dissent disagreed that the claims of the patent were directed to patent-eligible subject matter, arguing that the Federal Circuit’s non-precedential decision should not control the outcome of the present proceeding. According to the dissent, the Federal Circuit has never determined whether the question of patent-eligible subject matter is a pure question of law or a mixed question of law and fact; if the eligibility question is based on underlying facts, then the new evidence developed as part of the record in the instant proceeding has the potential to control the ultimate determination. In this case, the dissent would have found the claims to be directed to the abstract idea of “placing an order based on observed (plotted) market information,” which the dissent considered as nothing more than observing conventional trading—something that could be performed mentally or with pen and paper. In addition, because the claims lacked specific improvements directed to how the basic claimed steps of “selecting an order” and “sending an order” would be accomplished, the dissent would have found that the claims failed to provide something “significantly more” than the abstract idea itself.